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IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
European Union - Appellant
Versus
Union of India - Respondent
W.P.(C)-IPD 5 of 2022 and W.P.(C)-IPD 6 of 2022
Decided On : 31-05-2022
| Table of Content |
|---|
| 1. petitioner's patent applications were deemed abandoned due to procedural issues. (Para 2 , 3 , 4 , 5 , 6 , 7 , 8 , 9 , 10) |
| 2. petitioner argues the controller lacks power to condone delay; courts can correct procedural app errors. (Para 11 , 12 , 13 , 14) |
| 3. court reviews the mandatory and non-extendable deadlines in patent application processes. (Para 15 , 16 , 17 , 18 , 19 , 20 , 21 , 22 , 23) |
| 4. legal cases affirm that abandonment requires a conscious act, not mere procedural lapses. (Para 30 , 31 , 32 , 33 , 34 , 35 , 36) |
| 5. court emphasizes the importance of intention in abandonment cases, restoring applic evidence. (Para 49 , 50 , 51 , 52 , 53 , 54 , 55 , 56 , 57) |
JUDGMENT
Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.
2. These two writ petitions, W.P.(C)-IPD-5-2022 & W.P.(C)-IPD-6-2022 have been filed by the Petitioner-the European Union, represented by the European Commission located at Brussels, Belgium. The Petitioner is seeking setting aside of orders dated 21st January, 2019 and 30th September, 2019, passed by the Controller General of Patents. Vide the said orders, two patent applications bearing nos. 11123/DELNP/2012 and 3466/DELNP/2013, filed by the Petitioner have been treated as `deemed to have been abandoned' under Section 21(1) of the Patents Act, 1970 (hereinafter, `the Act').
Brief Chronology of events in W.P.(C)-IPD-5-2022
3. The Petitioner filed Indian application no. 11123/DELNP/2012 on 21st December, 2012 through its Indian patent agent, Mr. Guruswamy Nataraj (hereinafter, ` first patent agent'). The said application was titled `Method of Providing an Authenticable Time-and-Location Indication', the bibliographic details of which are set out below:
| Priority Application No. | EP 10166025.6 |
| Earliest Priority Date | 15/06/2010 |
| PCT International Application No. | PCT/EP2011/058989 |
| PCT International Filing Date | 31/05/2011 |
| Indian Patent Application No. | 11123/DELNP/2012 |
| Indian Filing Date | 21/12/2012 |
| Request for Examination Filed | 7/10/2013 |
| FER issued | 10/4/2018 |
| Dates of follow up emails written by the Applicant's international attorneys to the Indian patent agent | 16/11/2018, 23/08/2018, 26/07/2018, 28/05/2018, 18/05/2018, 26/04/2018, 28/03/2018 |
| Date of order holding the application `deemed to be abandoned' | 21/1/2019 |
| Date of engaging fresh attorneys | February, 2019 |
| Date of filing of Reply to the FER along with a representation seeking hearing in the application | 29/4/2019 |
| Term of the Patent if granted | 30/5/2031 |
Brief Chronology of events in W.P.(C)-IPD-6-2022
4. The Petitioner filed application no. 3466/DELNP/2013 on 18th April, 2013 through the same patent agent mentioned above. The said application was titled `Apparatus and Method', the bibliographic details of which are set out below:
| Priority Application No. | GB 1016079.4 |
| Earliest Priority Date | 24/09/2010 |
| PCT International Application No. | PCT/EP2011/066478 |
| PCT International Filing Date | 22/09/2011 |
| Indian Patent Application No. | 3466/DELNP/2013 |
| Indian Filing Date | 18/04/2013 |
| Request for Examination Filed | 7/10/2013 |
| FER Issued | 29/6/2018 |
| Dates of follow up emails written by the Applicant's international attorneys to the Indian patent agent | 16/11/2018, 18/10/2018, 21/09/2018, 23/08/2018, 26/07/2018, 28/05/2018, 18/05/2018, 26/04/2018, 28/03/2018 |
| Date of order holding the application as `deemed to be abandoned' | 30/9/2019 |
| Date of engaging fresh attorneys | March, 2019 |
| Date of filing of Reply to the FER | 29/4/2019 |
| Term of the Patent if granted | 21/9/2031 |
5. The Petitioner, through the initially engaged European Law Firm, M/s FREYLINGE had engaged the first patent agent to file and prosecute the Indian national phase applications of their Patent Cooperation Treaty (hereinafter, `PCT') applications before the Indian patent office.
6. Thereafter, the responsibility of processing, prosecution, maintaining and coordination of these applications were moved by the Petitioner to another European firm namely, M/s GEVERS in June 2017. Emails were exchanged between the first patent agent
Court may allow reinstatement of patent applications deemed abandoned due to patent agent's negligence if applicant shows no intent to abandon and diligent follow-up.
The Controller does not have the power to extend the time for filing a response to the FER under Section 21 of the Act and Rule 24B of the Rules. However, the Court can exercise its writ jurisdiction....
An appeal under Section 117A of the Patents Act is not maintainable against an order passed under Section 21(1), which deems a patent application abandoned if the applicant fails to comply with all r....
The court ruled that a patent application cannot be deemed abandoned due to an error by the applicant's agent unless intentional abandonment is proven.
Rule 22 of Patent Rules validly extinguishes patent rights for non-compliance with statutory deadlines, affirming the necessity of strict adherence to filing timelines.
The Registrar of Trade Marks cannot condone delay in review applications beyond the period prescribed by Trade Marks Rules, affirming adherence to statutory timelines.
The duty of the ld. Asst. Controller to consider the objections and pass a reasoned order, and the purpose of Rule 28(7) of the Patent Rules, 2003 in capturing the submissions made during the course ....
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